After two exciting and lively debates on the principle of technological neutrality (see Sebastian Beck-Watt’s coverage ) and reproduction rights (see Paul Blizzard’s coverage ), IP Osgoode’s Unpack��SODRAC symposium turned to a new panel to ‘unpack’ the paragraphs of [SODRAC] concerning the mandatory (or not) nature of tariffs set by the Copyright Board.

The fresh panel was asked to tackle the issue of whether the majority decision of SODRAC dispelled the notion—coined by Ariel Katz as the “”—that once the Copyright Board approves a tariff, any unauthorized use of a work triggers legal obligations to pay the royalties specified in the tariff and comply with the terms and conditions. The majority judgment’s alleged ‘debunking’ is found in paragraphs [101]-[13]. At paragraph [107] Justice Rothstein (for the majority) wrote: “In the absence of clear authority that this is Parliament’s intent, the burdens of a license should not be imposed on a user who does not consent to be bound by its terms” and, at [112] he concluded “that the statutory licensing scheme does not contemplate that licences fixed by the Board pursuant to [of the Copyright Act (the “Act”)] should have a mandatory binding effect against users [emphasis added].”

This issue was posed to the panel—comprised of Katz ( Intellectual Property Professor), Mario Bouchard (former General Counsel, ), Adriane Porcin ( Copyright Professor), Bobby Glushko (Head of the at University of Toronto), and Howard Knopf (Copyright Lawyer and )—in the form of the following questions: what are the potential implications for collective management organizations (CMOs), copyright users, and the copyright board?; and, more specifically (a major point of contention) does the reasoning of paragraphs [112]-[113] extend to other tariffs approved by the Copyright Board, and if so, does this “debunk” the so-called “mandatory tariff” theory?

Ariel Katz – The spectre is dismissed

Katz promptly asserted that Copyright Board issued tariffs are not mandatory. He focused on the language of of the Act, stating that even though a literal reading of s 68.2(1) appears to grant CMOs a right to collect royalties, it does not grant such a right. The provision reads:

68.2 (1) Without prejudice to any other remedies available to it, a collective society may, for the period specified in its approved tariff, collect the royalties specified in the tariff and, in default of their payment, recover them in a court of competent jurisdiction.

Katz examined the key phrase “default of their payment”, and reasoned that a collective may only collect royalties if the user owes a payment. Logically, Katz argued, if the user does not owe any payment they cannot be in default. As a result, a CMO’s right to collect only extends to a licensee, and not a user who falls outside the definition of the type of users to which the tariff applies.

Katz then argued that the holding was applicable to of the Act, since it is indistinct from s 70.2. He focused on the plain meaning of the word “tariff” and stated that if parliament wanted it to be mandatory, they would have called it a “Levy”.

As a joint intervener in the case with the Centre for Intellectual Property Policy, more of Katz’ argument can be found in his .

Mario Bouchard – Copyright Board-issued tariffs are mandatory

Bouchard followed Katz and began with a criticism of the way the issue was framed for the panel. He was concerned by the classification of s 70.2 licenses as tariffs. Bouchard dispelled this notion by explaining that s 70.2 licenses are not tariffs, they are regulations.

Turning to SODRAC, Bouchard argued in favour of the mandatory tariff theory. He reasoned that the SODRAC decision misapplied, misapprehended, and ignored copyright principles, principles of statutory interpretation, judicial precedents, legislative history, and the way foreign copyright values approach the regulation of collective societies. Concerning copyright principles, Bouchard stated that—well established by the —where permission is required, it is for the user to ask permission from the copyright owners, not the other way around. Asking rhetorically “are we to embrace Google’s approach to copyright: use first, ask forgiveness later”, he conceded that it may be an appealing instrumentalist approach, but Berne still legally controls.

Adriane Porcin – Do users need CMOs in a transactional world?

Porcin followed Bouchard and took a different approach to the issue, seeking not to conclude what the majority decision means. Rather, she examined the context in which the decision was made and inquired into the purpose of the tariff regime, mandatory or not. After detailing the “one size fits all” approach tariffs impose on users, she opined on the purpose of s 70.2 and CMOs in a transactional world where organizations (like CBC) are free to negotiate licensing terms with or without the assistance of the Copyright Board as arbitrator.

She presented four points on this topic: [1] different copyright collectives have different types of relationships with their members, depending on the nature of the work and industry in which the tariff functions, and so the ability to maneuver around s 70.2 depends on the rights granted to each CMO; [2] because some CMOs’ license valuations have disconnected from the utility of those licenses to the users, intervention of the Copyright Board is essential to ensure that users are not subjected to the CMO’s own price setting; [3] the Copyright Board is in a better position than CMOs to assess the fair market price, but the timing of valuations is an issue in fulfilling their role as market surrogate; and [4] CMOs’ evolving governance structures may alleviate the issue. On the last point, Porcin used Access Copyright as an example of a CMO that evolved by shrinking their number of directors and recruiting them based on their industry knowledge and skills. She explained this may be an encouraging step toward reducing the disconnected valuations between CMOs and users).

Bobby Glushko – The lack of clarity about tariffs is not user-friendly

Glushko—Head of Scholarly Communications and Copyright at University of Toronto—brought a unique user’s viewpoint to the panel. Glushko, whose role is to help his institution identify, evaluate and mitigate risk, focused on the uncertainty of this area of copyright law. He explained that in his case, the uncertainty over whether tariffs are mandatory or not—combined with the uncertain potential outcome of valuations involved in those tariff hearings—made his job particularly difficult.

Glushko further explained how the Principle of Technological Neutrality, in light of the SODRAC decision, only exacerbates the uncertainty in his position. It remained unclear what activities constitute copying, whether they are compensable, and what the value of those copies may be.

Howard Knopf – If you don’t like the bridge toll you can swim across

Knopf closed the panel and described why CMOs might see the SODRAC decision as bad for business: it expressed a clear message that, for users, tariffs are not mandatory. Knopf detailed the historical nature of a tariff, proffering an analogy to the old train tariffs from Toronto to Ottawa to regulate train companies, and suggesting that these were only mandatory it you took that particular train—you could ride a bus, plane, bike or hitchhike if they were cheaper, faster or better means to travel. His argument was that the SODRAC decision gives users leeway to choose “alternate means of transportation” by clearing rights for works they want to use through different mechanisms without running afoul of the Act. Bouchard spoke up in disagreement with this analogy, clarifying that users are free to use alternate repertoire (reinforcing the mandatory tariff theory).

Knopf conceded an earlier argument by Bouchard—that tariffs are in fact regulations—but tempered the concession by adding that parliament is capable of adding explicit provisions to make such tariffs mandatory. In the absence of such language, tariffs as regulations still need not be mandatory.

Conclusion

In light of the disagreement between the panelists on whether the mandatory tariff ‘Spectre’ had been debunked, the panel illuminated the difficulty presented by Glushko: ��If we cannot agree on the very nature of tariffs, it makes it difficult for both users and CMOs alike to predict the implications of �����ٸ鴡��’s decision. And, with CMOs acting as representation for authors (and owners), and users often being authors themselves, it is hard to find where the SODRAC majority decision falls with regard to the Act’s role as balancer of the public interest and obtaining a just reward for the creator. Does it tilt in favour of the public interest, giving more transactional freedom to users and authors, and accordingly encourage dissemination of new works? Or, does it inject more uncertainty and place greater barriers to the just reward of creators? One thing is certain: the issue made for a fascinating and passionate panel.

The post Tariffbusters: Does the CBC v SODRAC decision debunk the "Mandatory Tariff Theory appeared first on IPOsgoode.

As is the case with many questions of legality, the typical answer to each of the above questions is: “it depends”. Section 5 of Canada’s (the “Act”) stipulates that copyright persists in “every original literary, dramatic, musical and artistic work”. Dramatic work is defined as “any piece of recitation, choreographic work or mime, the scenic arrangement or acting form”. Arguably, some sports moves could be characterized as a choreographic work. For example, although the World Wrestling Federation has not claimed copyright protection over its wrestling matches, a reported last year suggests that the shows are in fact choreographed.

In 1991, in the case of FWS Joint Sports Claimants v Canada (Copyright Board)��(“FWS Joint Sports”)��1], the Federal Court of Appeal had to decide whether a decision by the Copyright Board to deny copyright over a football play was valid. The FWS argued that copyright protection should persist, however, the Board was of the view that, unlike dance, a sporting event is for the most part a random series of events. The Federal Court of Appeal agreed with the Board. The Court stated that a mere spectacle is not sufficient to attract copyright protection because it is inconsistent with the concept of choreography: “what transpires on the field is usually not what is planned, but something that is totally unpredictable.” The��Court elaborated by explaining that ballet choreography is copyrightable, stating that "[n]o one bets on the outcome of a performance of Swan Lake", as the��choreography is set and the performance is highly predictable. In the same decision, the Court also held that playbooks or game plans could be protected by copyright. Essentially, the decision suggests��that scripted moves are��protected under the Act.��However, in another interesting case, a U.S. court determined that the by yoga guru Bikram Choudhury were��not copyrightable. These cases cause and ultimately raise the following question: What exactly amounts to ‘choreography’ under the Act?

Looking at the array of , it is apparent that some are more likely to attract copyright protection than others. Beach volleyball, wheelchair Rugby or water polo are unlikely to��find��protection from��the Act even if a team's coaches and athletes meticulously scripted and recorded some of the main moves for the Games since the presence of direct opponents would inject significant unpredictability to��matches. Copyrightability aside, this unpredictability is what makes sports so exciting, it keeps fans glued to the TV screen and live observers gripping the edge of their seats.

Other sports are more choreographed and give the athlete greater control over his or her moves. Arguably, equestrian and gymnastics involve more��choreography than a scripted event like wrestling. Therefore, Canadian gymnast and equestrian ��may technically protect their routine under the Act. However, aside from being a copyrightable subject matter, the work in question also has to be ‘original’. In Canada, to qualify as being ‘original’, the work must have been independently created by the author, who had to use some skills and judgment when executing the work, as set out in in . It is unlikely that��Hugh Smith and Jessica Phoenix invented the moves in their routine. Rather, they likely borrowed and built on proven moves��used by��other athletes, who themselves borrowed from their predecessors,��and so on.

Given the strict criteria a work has to meet to qualify as a copyrightable work under the��Act, it is unlikely that any of the Games' athletes will try to classify��their glorious sports moves as intellectual property at this juncture. Hopefully, in keeping with the Games' motto - 'United We Play', all Pan Am and Parapan Am battles will be fought on the fields,��pools and tracks rather than in the court room.

Gosia Piasecka��is an��IPilogue Editor and a JD candidate at��Thompson Rivers University Faculty of Law.

[1] 1991 CarswellNat 157, [1992] 1 F.C. 487.

The post ‘United We Play’ or ‘United We Sue Away’? The Copyrightability of Sports Moves appeared first on IPOsgoode.

It is a well-established principle of copyright law that as per Section 3(1) of the , copyright means “the sole right to produce or reproduce the work or any substantial part thereof.” However, as noted by other copyright law , Canadian courts have frequently avoided defining what a “substantial part” actually means. In the Court stated that it is a flexible and contextual concept rooted in quality rather than quantity. Conversely, in , the Supreme Court explained it as being “not trivial” or “important.” As such, if an insignificant part of a work (a part that is not “substantial”) is copied the copyright owner’s rights are not violated. What a “substantial part” actually is is therefore quite important to an infringement analysis, and comments by the Copyright Board in their recent decision are worthy of discussion.

The Access Copyright stemmed from objections by various provincial and territorial governments to the proposed statements of royalties that the Canadian Copyright Licensing Agency (operating as ) filed in March 2004 and 2009 pursuant to the . Specifically, the royalties to be collected concerned the reproduction of various literary works. In the decision, the Board had to determine what copying occurred in order to determine the proper royalty calculations. In doing so, the Board made the following finding at :

In this matter, without the benefit of a qualitative analysis of each of the copied works, and without even knowing which portions of a work were copied, in our opinion the amounts [of]…1 to 2 pages of a work, are reasonable approximations in establishing non-substantiality. However, since 1 to 2 pages of a short work can amount to a great portion of that work, we further limit this approximation by requiring that the copying of 1 to 2 pages not constitute more than 2.5 per cent of the entire work…Thus, for the purposes of calculating a royalty rate for this Tariff, we consider that copying events where 2 pages were copied from a work of 80 pages or more, or 1 page were copied from a work of 40 pages or more, represent copying that was not a substantial amount of the work.

In my opinion, the Board has navigated into dangerous waters in this attempt to quantify what makes “substantial part” substantial. Imagine hypothetically that I wrote a 100-page work which takes only two consecutive pages to describe the plot and characters (forget that this sounds like a pretty awful book unlikely to be infringed). If another author used the information from those two pages (and nothing from the rest), would my rights be unprotected because the copying percentage falls below 2.5 percent? Or would my rights be protected by a qualitative assessment of the work as a whole with those two pages deemed substantial, omitting a quantitative analysis? In either circumstance, the Board is making murky waters murkier, not clearer, by adding a number to an assessment that has traditionally remained (in my opinion for good reason) concerned with what was copied from the page rather than how many pages were copied.

It is possible that these fears are premature. notes that the Board’s decisions are not court decisions, and this one is particularly tempered with an acknowledgement by the Board that the above numbers were determined “without the benefit of a qualitative analysis.” Yet, the fact that the Board felt compelled to define “substantial” in order to conduct its calculations may indicate that this is a practice it will embrace not just in regards to literary works, but other protected creations in the future.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

The post Has the Copyright Board Taken a Substantial Position on Substantial Parts? appeared first on IPOsgoode.

The IPilogue has covered these 5 cases in depth and our analysis of each can be found .

The lecture began with introductory statements by the Founder and��Director of IP Osgoode, . IP Osgoode's followed with a short outline of Justice Rothstein’s legal career and past accomplishments. We learned that before becoming a judge, Justice Rothstein spent a number of years in private practice dealing primarily with administrative and transportation law issues.�� He��later became a member of the Canadian Human Rights Tribunal��and held��a host of other offices throughout his career. (More information on Justice Rothstein’s career can be found .) Upon his appointment to the Federal Court in 1992, Justice Rothstein developed an interest in intellectual property law, writing a number of influential decisions. He was eventually elevated to the Supreme Court of Canada (SCC) in 2006. Professor Vaver made special note that the date of Justice Rothstein’s official swearing-in ceremony – April 10^th, 2006 – was auspicious for sharing the anniversary of the commencement of the and potentially meant important things to come for the field of copyright law as a result.

Justice Rothstein, taking to the podium,��made his sizable audience laugh at his forgetfulness to bring his “red Santa Claus robes” for the lecture and mentioned that his introduction would have been very different had his wife Sheila given it. This set the tone for the rest of the lecture – Justice Rothstein proceeded to give a very frank and honest discussion on the Copyright Pentalogy cases, eager to generate discussion on the cases and to answer questions the audience had on his experiences when deciding these cases.

Justice Rothstein began with a short discussion of 3 of the cases: ; ; and . To an extent, these could be considered the “less-controversial” decisions by the Supreme Court of Canada in the Pentalogy (as evidenced by the unanimous decisions in Re:Sound and SOCAN v Bell and the majority of 8 in Rogers v SOCAN). However, Justice Rothstein had some important points he wanted to share with respect to the latter two cases.

In SOCAN v Bell, the court had to determine if an online preview of a song could be considered “research” for the purpose of avoiding a claim of copyright infringement under a fair dealing exception. The SCC agreed with the decision of the Copyright Board – such a use was reasonable and was protected under fair dealing. Justice Rothstein referred to what he thought were 4 interesting aspects of this case:

1)���������� “Research” as described in the case is a very low hurdle to overcome and provides an expansive approach to the first part of the fair dealing test laid out in .

2)���������� In determining whether the specific dealing at issue was fair or not under��the second part of the fair dealing test,����the reviewing courts should��give deference to first instance courts that make a determination on this issue.

3)���������� Fair dealing is to be assessed from the point of view of the purchaser/user.

4) �� �� ��"Research" need not be associated with traditional intellectual pursuits.

In Rogers v SOCAN, the court determined the meaning of “to communicate the work to��the public” in s. 3(1)(f) of the Copyright Act in the context of streaming musical works. Justice Rothstein wrote the decision for the majority: streaming of a copyright work to a number of individuals is a public communication.�� The determination of this issue could be different depending on whose point of view (the sender or the receiver); in the end the desire for the court to remain technologically neutral led to it's decision.

The discussion of the last two cases in the Copyright Pentalogy ( and ) provided interesting insight into the thoughts and opinions of the Supreme Court Justice (it should be noted that Justice��Rothstein wrote dissenting opinions in each of the cases).

To begin his discussion of ESAC v SOCAN, Justice Rothstein told a story about a case he worked on in 1990 about railway companies and grain rates, representing four provinces in the case. Ian Binnie, who would also later become a Justice of the SCC presented a very compelling statutory interpretation argument to the court. After a sleepless night preparing a response, Justice Rothstein was able to convince the court that the railway company was attempting to get double compensation for its product (“double-dipping”). The purpose of the story was to illustrate that judges��do not like��double-dipping and will go to great��lengths to prevent any such unjust enrichment. The relevance of the anecdote became readily apparent as ESAC v SOCAN concerned copyright holders of musical works wanting to receive royalties for their music used in video games which had been downloaded over the internet. SOCAN attempted to construe the download as a communication (the artists only negotiate a right to reproduce the musical works), thereby entitling artists to a separate communication tariff.�� For Justice Rothstein, applying his caselaw experience as a practitioner, now on the other side, it wasn’t very difficult to see how some of the judges viewed SOCAN's approach as an attempt to “double-dip".

Justice Rothstein repeated the well-known concept that the purpose of the court is to give effect to legislation that has been created by governmental bodies and to interpret those laws in accordance with their purpose. However, Justice Rothstein disagreed with the approach that the majority took in this case – in determining that the list in s. 3(1) of the ��are not individual and distinct rights (as he and the minority believed) but rather enumerated examples of the sole rights to reproduce, perform and publish works that is outlined in the preamble to s. 3(1). He also disagreed with the majority’s decision to push technological neutrality (a desirable objective but not one enshrined in the Copyright Act) ahead of some of the statutory requirements that he felt were overlooked.�� Justice Rothstein then pointed out that SCC judges are not prescient or clairvoyant – the court does not usually know what will happen as a result of their decisions until they take place.

If technological neutrality becomes an overriding issue in copyright cases, Justice Rothstein is not sure if copyright laws will be read more narrowly now or what effect the Copyright Modernization Act will have on future cases that come to the federal courts.�� He��noted that some cases have already come forward as a result and that there will likely be many more.

Justice Rothstein finished his presentation with a discussion of the Access Copyright case – where photocopies made by teachers and distributed to their students as part of class instruction were determined to be fair dealing under s. 29 of the Copyright Act. These types of copies were considered “Category 4” photocopies – the other 3 categories were already considered fair dealing and were either copies made for the teacher’s use or at the request of a student. While the majority determined that these copies could be considered fair dealing (the end user was the student and considerations towards their research should weigh in their favour), the minority believed that since the teacher would be doing the copying, the teacher’s purpose should weigh in their favour.

After the decision by the SCC on the subject, the redetermination by the Copyright Board was, in the words of Justice Rothstein, “terse” (as most 1-sentence decisions tend to be). The SCC’s decision did not allow for much flexibility and went against one of the usual practices of appellate courts – to give deference to the Copyright Board in findings of fact (fairness in claims of fair dealings is one such finding of fact).�� Justice Rothstein noted that while the courts “don’t always practise what they preach”, one of the differences between the relationship between the Copyright Board and the courts as opposed to other tribunals is that the federal and provincial courts��have concurrent jurisdiction with the Copyright Board in interpreting rights. He finished his discussion of the case by stating that he agreed with a deferential review by appellate courts on factual questions but not on legal questions decided by any tribunal.

After a round of applause concluded his presentation, Justice Rothstein took a seat between Professors D’Agostino and Vaver and answered some of the questions that audience members had with respect to the Copyright Pentalogy and his thoughts on copyright issues. One such question was posed by IP Osgoode's concerning the role of the balancing principle as discussed in and its effect on statutory interpretation. Rothstein replied that this balancing is at the very heart of many of the decisions the court makes, not only in copyright cases but other intellectual property cases such as the . He also stated that while some may believe that the “balancing” done by the court is an after-the-fact justification of the court’s decisions, the concept of balance is always in the mind of the adjudicators.

Another thought-provoking question by an audience member was whether there is room for common law equity considerations in copyright law��(being a creature of statute). Justice Rothstein responded that even though the court is bound to the statute in a number of ways, equitable considerations can come into play.�� While he was unsure of the application of the equity��doctrine to Canadian copyright law, he mentioned��one possibility could be new factors being added to the six factor CCH fair dealing test.

After a resounding applause from the audience at the closing of the discussion and a short wait as the Supreme Court Justice answered the personal questions of some inquisitive Osgoode students, I was able to thank Justice Rothstein for speaking at our school and providing us his insights on these important copyright issues. It was an enlightening afternoon and I hope that he returns to speak to us again in the future. Perhaps we can get his wife Sheila to introduce him��next time? (You had to be there for his opening remarks, please do watch the webcast when it becomes available).

Adam Del Gobbo is a JD Candidate at Osgoode Hall Law School.

The post IP Osgoode Speaker Series: The Honourable Mr. Justice Marshall Rothstein – Reflections on the Supreme Court of Canada 2012 Copyright Decisions appeared first on IPOsgoode.

The decision stems from an by Re:Sound on March 28, 2008 proposing two Tariffs (Tariffs 7 & 9), which the Board rejected. Re:Sound collects royalties when a sound recording is performed in public or communicated to the public by telecommunication based on . The proposed Tariffs would have allowed for royalties to be claimed for the 'use of sound recordings embodied in a movie by motion picture theatres and other establishments' (Tariff 7) and 'for the use of sound recordings in programs broadcast by commercial over the air pay, specialty and other television services' (Tariff 9). In other words, the tariff would have required movie theatres and TV stations to pay a royalty to Re:Sound for the recorded music included in movies or TV shows. To read a previous IPilogue analysis of the Board and FCA decisions .

The Motion Picture Theatre Association of Canada (MPTAC) objected to Tariff 7, while a series of telecommunications companies including Rogers Communications, Shaw Communications, Bell Express Vu and Quebecor Media objected to Tariff 9 (collectively referred to as the ‘Objectors’).

The main issue considered by the Board was “...[w]hen is a pre-existing sound recording that is subsequently incorporated into a soundtrack no longer a sound recording?” The basis of the analysis stemmed from the interpretation of pertaining to the defined term “sound recording” and the undefined term “soundtrack”. (Board, 27)

Section 2
"Sound Recording"

‘means a recording, fixed in any material form, consisting of sounds, whether or not a performance of a work, but excludes any soundtrack of a cinematographic work where it accompanies the cinematographic work’

Re:Sound argued that pre-existing sound recordings in a "soundtrack" accompanied by a cinematographic work are included in the definition of "sound recording", and should therefore not be excluded from s.19 remuneration.

The objecting parties submitted that the definition of sound recording and the soundtrack exclusion therein applies to exclude protection from the use of pre-existing sound recordings when they are part of a soundtrack that accompanies a cinematographic work. The same sound recording on its own (not accompanied by a cinematographic work) would remain a sound recording as defined by the Act, and subject to the remuneration right. Otherwise, the objectors contended that the copyright holders of the sound recordings could effectively wield a veto power over any soundtrack which accompanied a cinematographic work.

After reviewing the relevant legislation, namely sections 2, 15, 17, 18 and 19 of the Canadian Copyright Act, the Board addressed the submissions made by the Re:Sound:

• First, the definition of ‘sound recording’ was amended at the Committee stage to ensure that a soundtrack accompanied by the cinematographic work would not be entitled to equitable remuneration while the soundtrack absent the cinematographic work would receive equitable remuneration. (Board, 36)
• Second, cinema and television were not a part of the dialogue concerning the enactment of s.19 of the Act. (Board, 37)
• Third, that Parliament, having aligned its legislation with the does not require protection where the sound recording is incorporated into a soundtrack. (Board, 38)
• Finally, (and what they found to be the most important) the Board observed that the Committee clearly never intended to include television broadcasts within s.19 of the Act. (Board, 39)

Re:Sound relied heavily on Australian, American and UK authorities - all which were rejected by the Board due to legislative differences. The Board concluded that the proposed Tariff had no legal foundation and could therefore not be certified. (Board, 44)

Re:Sound applied for a of the Board’s decision to the Federal Court of Appeal on February 22, 2011. The Federal Court upheld the findings of the Copyright Board and held that the Re:Sound’s concerns that the sound recording could be published and disseminated on the internet, or be extracted from the DVD without recourse or remedy were ill founded. They also found that reference to the Australian jurisprudence and UK law was irrelevant because the jurisdictions are based on fundamentally different laws. Finally, the applicant also raised arguments based on the Rome Convention in which the Court held that phonograms are exclusively aural fixation of sounds (Article 3, paragraph (b)), “...[a]nd that consequently a “fixation of images (e.g., cinema) or of images and sounds (e.g., television) are therefore excluded” (WIPO Guide to the Rome Convention section 3.7).”

The main issue considered by the was the statutory interpretation of the relevant provisions:

"Do pre-existing sound recordings incorporated into a soundtrack fall within the meaning of the undefined term “soundtrack” used in the definition of “sound recording” in s. 2 of the Act? In other words, in view of the fact that only a “sound recording” can be the subject of a tariff under s. 19, can the reproduction of a pre-existing sound recording that is part of a soundtrack of a cinematographic work be the subject of a tariff when the soundtrack accompanies the cinematographic work?" (SCC, 25)

The Court held that a reading of the provisions in a manner other than the one proposed by the Board would be 'superfluous'. As a result, the Court opined that a sound recording in a soundtrack would not trigger the remuneration scheme under s.19 of the Act when accompanied by a cinematographic work or television program.

After reviewing the excerpts made by the Standing Committee on Canadian Heritage concerning the s.19 provision of the Act, the Court confirmed that that a soundtrack CD would normally qualify under the s.19 remuneration scheme, as it is not accompanied by a movie or television program. However, once the soundtrack accompanied either a movie or television program, it would be excluded from the remuneration scheme.

The SCC also addressed the international jurisprudence used by the appellants to support their position, holding that "...[t]he foreign jurisprudence makes it clear that significant differences exist between Canadian copyright legislation and the foreign legislation on which those decisions are based".

Finally, concerning the appellants arguments based on the , the Court held that the appellants overlooked article 3 "...[w]hich defines a “phonogram” as “any exclusively aural fixation of sounds of a performance or of other sounds”. Thus, excluding a soundtrack from the definition of “sound recording” where the soundtrack accompanies the cinematographic work is consistent with the Rome Convention, since this exclusion is not for “exclusively aural fixations”." (SCC, 49) The Court held that Canada is aligned with the Rome Convention because once the sound recordings are extracted from the soundtrack (in which case it is not accompanying the cinematographic work or television program), the remuneration scheme would apply.

After considering both the Copyright Board and FCA’s decisions, the Supreme Court of Canada rejected the appellant's interpretation of 'sound recording' holding that:

“When it accompanies the motion picture, therefore, the recording of sounds that constitutes a soundtrack does not fall within the definition of “sound recording” and does not trigger the application of s. 19. A pre-existing sound recording is made up of recorded sounds. The Act does not specify that a pre-existing recording of “sounds” that accompanies a motion picture cannot be a “soundtrack” within the meaning of s. 2. In my view, a pre-existing sound recording cannot be excluded from the meaning of “soundtrack” unless Parliament expressed an intention to do so in the Act. It could have done this by, for example, excluding only “the aggregate of sounds in a soundtrack”.” (SCC, 36)

The SCC concluded that the Board was correct in its interpretation of ‘sound recording’, ‘soundtrack’ and that its decision was “...[c]onsistent with the scheme of the Act, the intention of Parliament and Canada’s international obligations. Contrary to the appellant’s suggestion, it does not lead to absurd results.”

In a following the decision, Re:Sound President Ian MacKay was quoted as saying that "...[i]t is the Supreme Court's role to interpret the law as it exists, not as it should be. Unfortunately, Canada's copyright law has today been found to put Canadian recording artists and record companies at a disadvantage in the international marketplace." Publishers and songwriters will continue to receive protection for these works under the Copyright Act, whereas performers and musicians will not. However, as the Supreme Court noted, if Parliament intended to exclude pre-existing sound recordings from the definition of a soundtrack - it would have done so. Further, as mentioned throughout the decision, a soundtrack on its own would receive remuneration rights based on s.19, just not when accompanied in a movie or television show.

As the Board mentioned, granting such rights could inevitably "...[p]ermit these contributors to a movie, but not the copyright owner of the movie, to control the rental of the movie." (Board, 29) although this was not addressed by the SCC.

The new Copyright Bill C-11 does little to back Re:Sound's plight for adding Tariffs, although interestingly enough, the decision follows a recent international conference held to formalize a new treaty for audiovisual performers. The , which concluded in June, is meant to grant rights to audiovisual performers akin to copyright. Perhaps future copyright reforms meant to ratify this treaty will grant Re:Sound the rights they are looking for.

Courtney Doagoo is a doctoral student at the University of Ottawa, Faculty of Law.

The post Re:Sound v. MPTAC: SCC Upholds Copyright Board's Decision appeared first on IPOsgoode.

At issue was whether this process of downloading a ringtone triggered the distinct right under ��of��the Copyright Act to communicate the work to the public by telecommunication in addition to the right of reproduction (which had already been contracted for). The wireless carriers suggested that this amounted to double dipping as they were already paying compensation once for this transaction. In characterizing each individual subscriber’s download as a one-on-one transmission, the wireless carriers argued that this was not a communication nor was it “to the public”.

However, the FCA upheld the Board’s decision in concluding “that the transmission of ringtones by wireless carriers to their customers on request is a communication to the public by telecommunication.” The FCA relied in part on the SCC’s previous decisions in 1) , to support that this transmission is a communication; and 2) in , to support that a series of transmissions of the same work to different individuals can be “to the public”.

The importance of this decision goes beyond ringtones and cell phones to the growing number of Copyright protected works that are distributed over the Internet and other networks. This decision implies broadly that when a work is made available online in a way that results in a reproduction, for example as a download, both rights will need to be cleared and compensated. This extends beyond music to all protected literary, artistic and dramatic works. In the online context, it also arguably establishes these two rights as an unavoidable ‘dual right’ since it’s not clear that any online activity, including ordinary web browsing, does not necessarily entail both a reproduction and a transmission.

By dismissing the application for leave to appeal, the SCC has opted not to weigh in any further on this topic. This may signal that the Court feels its comments in SOCAN v. CAIP and CCH, referred to in the above FCA decision, are sufficient for the time being.

One immediate impact of the SCC’s decision not to hear an appeal will likely be on any judicial review on this issue from the Copyright Board’s more recent . Tariff 22.A broadly covers the communication of musical works over the Internet. Some objectors again argued that the transmission of a download is not a communication to the public by telecommunication.

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